Patent Rights: Should Patent Search Come Before Provisional Patent?

“Do you recommend doing a patent search before applying for a provisional patent or should you do the provisional patent right away? I have a product that is already on the market, and want to know if it has an active patent. Thanks for your time.” – Anonymous

I would say it’s more important, at this stage, to file for patent protection rather than conducting a patent search due to a few factors.

Factor 1

Our new patent laws (enacted this March) have made it more important to file for patent protection as soon as possible. Why? With this new laws, the first inventor to file for a patent on an idea/invention wins the patent rights – even if another inventor can prove that she came up with the idea first! Now that your idea is out on the market, if someone else sees your idea and beats you to the patent filing – you can forget about getting patent rights to your idea, even if you were truly the first one to come up with it. (There are some technical exceptions here, but we can get into those by telephone.)

Factor 2

Keep in mind, the U.S. government gives you 12 months from your first initial disclosure to file for a patent on your idea. If you don’t file within a year of the day you brought your product to market (or otherwise made a public disclosure), you are prohibited from obtaining any patent rights. So, the clock is ticking in two ways: 1. Be the first one to file for a patent, and 2. File for a patent within 12 months of your initial public disclosure. There are exceptions to point (2). You can learn more here

Factor 3

Provisional Patent applications are relatively cheap, especially considering the options our platform provides you with. Thorough patent searches take time and are just as costly. In my opinion, it’s best to use your funds to secure your priority with a provisional patent application and get the “patent pending” status right away… especially since your product is already out in the market. Since provisional applications aren’t examined for ‘novelty’, you are not gaining much by performing a patent search.

Factor 4

A non-provisional patent application leads us a different reasoning. (To learn more about the difference between a provisional patent application and non-provisional here. The costs associated with a non-provisional are substantially more than the provisional application. Therefore, it may be wise to conduct a patent search before investing the time and resources in pursuing a non-provisional patent application.

Furthermore, when attempting to file multiple inventions in a single non-provisional application, the Patent Office will issue what is known as a restriction requirement – forcing the applicant to split the inventions up into different patent applications. This causes both delays in examinations and additional fees. This is why it is important to split the ideas up, and do so early.

Factor 5

With every submission, we spend 30 minutes searching the United States Patent and Trademark Office’s patent database to see if your idea can be knocked-out from patentability. The “knock-out” search is just designed to give you an idea if something exactly like your idea has been patented before. It doesn’t give you the full picture. To get the full picture, you would need to invest in a more thorough patent search, which we offer for $600.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.


Source: Smartup Legal